`Tel: 571-272-7822
`
`
`
`
`Paper 12
`Entered: May 21, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`SAWAI USA, INC. AND
`SAWAI PHARMACEUTICAL CO., LTD.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00789
`Patent No. 8,399,514
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2019-00789
`Patent No. 8,399,514 B2
`
`
`In an email correspondence sent to the Board on May 8, 2019, counsel
`for Patent Owner requested a teleconference to seek permission to file a sur-
`reply to Petitioner’s Response to Patent Owner’s Opposition to Petitioner’s
`Motion for Joinder (Paper 10). The relevant portion of the email reads as
`follows:
`
`Patent Owner Biogen writes to seek leave to file a sur-reply to
`Sawai’s May 6, 2019, Response to Patent Owner’s Opposition to
`Petitioner’s Motion for Joinder (Paper No. 10) as Sawai raises
`new arguments and new evidence. Sawai’s statement that it
`“does not intend to produce its own testifying witnesses or file
`substantive papers in the Mylan IPR so long as Mylan remains a
`party to the case” constitutes a new position, as Sawai’s motion
`for joinder did not disclaim reliance on Sawai’s declarants absent
`agreement from Mylan. Compare Paper No. 10 at 1 with Paper
`2 at 4, 8; see also Ex. 1064, 1. Sawai also introduces five new
`exhibits, including new declaration evidence related to the RPI
`issue (Ex. 1060).
`Patent Owner has consulted Sawai, which has indicated that it
`(1) would “oppose a sur-reply on” its new position on its
`testifying experts but (2) “would not oppose a sur-reply that is
`(a) no more than 3 pages in length; (b) limited to the RPI issue;
`and (c) does not seek to introduce additional evidence.” As
`indicated above, however, Biogen seeks leave to file a sur-reply
`not limited to the RPI issue.
`In an email correspondence sent to the Board on May 9, 2019, the
`counsel for Petitioner provided the following clarification:
`
`Because it is not reflected in Biogen’s email below, Sawai
`clarifies that that it objected to a sur-reply on the issue regarding
`testifying experts with the explanation that it disagrees that such
`is a “new” position.
`A conference call in the above proceeding was held on May 14, 2019,
`among respective counsel for Petitioner and Patent Owner, and Judges
`Snedden, Chagnon, and Harlow. During the call, we discussed 1) whether to
`
`2
`
`
`
`IPR2019-00789
`Patent No. 8,399,514 B2
`
`grant Patent Owner a sur-reply on the RPI issue and 2) whether to grant
`Patent Owner a sur-reply limited to the joinder issue raised by Patent Owner.
`A transcript of the conference call will be entered by Patent Owner.
`Upon consideration of the parties’ positions, we denied Patent
`Owner’s request for a sur-reply on the joinder issue and granted Patent
`Owner’s request for a sur-reply limited to the RPI issue. In particular, we
`authorized Patent Owner to file a 3-page sur-reply limited to the RPI issue
`due, within 5 business days of the conference call, i.e., no later than May 21,
`2019. This Order memorializes that authorization for the record.
`We also reminded the parties that they should confer before any
`request for a conference call with the Board, that such requests should not
`include argument, but should be limited to a short statement of the issue to
`be discussed, and that such requests should propose agreed upon dates and
`times for the conference call.
`It is
`SO ORDERED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00789
`Patent No. 8,399,514 B2
`
`PETITIONER:
`
`Brian Sodikoff
`Christopher Ferenc
`KATTEN MUCHIN ROSENMAN LLP
`brian.sodikoff@kattenlaw.com
`christopher.ferenc@kattenlaw.com
`
`PATENT OWNER:
`
`Barbara C. McCurdy
`Mark J. Feldstein
`Erin M. Sommers
`Pier D. DeRoo
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`barbara.mccurdy@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`
`
`4
`
`
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